Sunday, 15 November 2009

Copyright & modding - games console modchip conviction upheld, & Microsoft's moves to cut off modded XBox gamers

There's been lots of publicity about Microsoft recently cutting off people with modded XBox 360 games consoles from access to Microsoft's online multiplayer gaming service Xbox Live. "Modding" games consoles involves modifying them to enable pirated games to be played on them. I say no more about that news - see e.g. BBC, Times, Guardian.

But there's been rather less publicity about the UK Court of Appeal upholding the conviction of a trader for selling modchips and modded games consoles (here Xbox, GameCube, Playstation2), though I've found some e.g. on Gamasutra and ComputerActive, and a brief mention in the BBC article I mentioned above. So here's a writeup of the case.


In Gilham v R [2009] EWCA Crim 2293 (09 November 2009) the Court of Appeal upheld the conviction of Christopher Gilham in the Worcester Crown Court for importing, advertising and offering for sale, selling and possessing games console modchips in the course of a business (and associated money laundering offences).

The court held that a game includes sounds and images that are subject to copyright. Even if the contents in the RAM of a games console at any one time isn't a "substantial" copy of the game, the image displayed on screen is a substantial copy of the original image which is subject to copyright.

Therefore playing a DVD of a pirated game involves making a "substantial" copy of it, so as to amount to an "act restricted by copyright" which infringes copyright if done without the licence of the copyright owner.

This must also apply to playing other pirated images, e.g. a counterfeit DVD of a movie or TV show, or indeed a downloaded pirated video file. And while the court focused on images and stills, they have clearly taken the view that as "common sense" this applies to sounds too, i.e. playing pirated music or other pirated audio, though they didn't explicitly spell out how.

The court has also repeated their strong suggestion that cases which involve complex copyright law issues should be pursued in the civil rather then criminal courts as they are better suited to a specialist judge than a jury.

Note that this was a UK case. The law here is quite different from what it is in the USA - e.g. we don't have "fair use" as a get-out or a constitutional mandate to further science and the arts, we have the much narrower "fair dealing". The US cases like Sony Betamax and indeed Grokster are irrelevant here.

The UK videogames trade body ELSPA (Entertainment and Leisure Software Publishers Association) have, not surprisingly, welcomed the result. I don't know if the conviction is going to be appealed further but I suspect not. Does anyone know?


The defendant was prosecuted and convicted for commercially selling the modchips as "any device, product or component which is primarily designed, produced, or adapted for the purpose of enabling or facilitating the circumvention of effective technological measures" within the meaning of section 296ZB of the UK Copyright, Designs and Patents Act 1988 as amended (CDPA).

That was one of the sections added to implement anti-DRM circumvention laws in the EU under the EU Copyright Directive - European Directive 2001/29/EC of the European Parliament and of the council of May 22, 2001 on the harmonisation of certain aspects of copyright and related rights in the information society.

The mod chips - modification computer chips - that the defendant dealt in were for use with Microsoft Xbox, Nintendo GameCube and Sony Playstation2 games consoles. Microsoft, Nintendo and Sony sell DVDs and CD-ROMs with games for playing on their respective consoles, and they each use protective technological measures to prevent counterfeit or "pirate" copies of games from being played on their consoles (i.e., DRM protection technologies).

To quote the Court of Appeal quoting Jacob LJ in Higgs [2008] EWCA Crim 1324 [note that the link to Higgs in the BAILII Gilham judgment is wrong, I've given the correct link]:

4. The games consoles contain embedded codes and normally will only a llow a game to be played if the CD-ROM contains a corresponding code. The codes on the CD-ROM are not copiable, at least for practical purposes. A principal effect of these measures is to prevent the playing of "pirate" games, that is to say games which have been copied without the permission of the owner or owners of any copyright material contained in the games, including copyright in images, sounds and so on.

In Gilham, the court noted that:

8. The modchips sold by the appellant were the Xecuter for use with the Microsoft Xbox, the ViperGC and Qoob chips for use with the Nintendo Gamecube and the Matrix Infinity for use with the Sony Playstation. The appellant sold the modchips either on their own, or already inserted into games consoles together with the paraphernalia needed to fit them. In some cases the purchaser of the modchip would have to download software from the Internet and install it in the modchip before it could be used. Once correctly installed, the modchips enable counterfeit games to be played on the consoles. It is right to point out that the modchips could be used for other purposes, for example to enable the user of the console to play a game he or she had created, but as will be seen that possibility is irrelevant to the issues on this appeal.

"Devices and services designed to circumvent technological measures" - elements of the offence

Now, to convict someone under section 296ZB(c)(i) in relation to games, the prosecution needs to prove that (para 14 of Gilham):

  1. the game is or includes copyright works (within the meaning of section 1 CDPA)
  2. playing a counterfeit DVD on a game console involves "copying" of a copyright work
  3. such copying is of the whole or a "substantial" part of a copyright work (s.16(3)(a) CDPA)
  4. the game consoles and/or genuine DVDs (i.e. copies of the copyright work or works created by or with the licence of the owner of the copyright) include "effective technological measures" within the meaning of section 296ZF designed to protect those copyright works, and
  5. in the course of a business the defendant sold or let for hire a device, product or component which was primarily designed, produced, or adapted for the purpose of enabling or facilitating the circumvention of those technological measures (here,the intention of a defendant is irrelevant).

The jury in the Crown Court had decided that all these had been proved.

Issue on appeal - "substantial"

The only issue on appeal was whether the playing of a counterfeit DVD involves substantial copying of a copyright work - what does "substantial" mean in this context?

The judge had directed the jury that in this context "substantial has its plain English meaning of 'more than minimal'".

The defendant argued that this direction was wrong.

Having looked at the meaning of "substantial" here in some detail (see paras 20 onwards of the Court of Appeal's judgment), the court did agree that "application of the substantial part test is more complex than was indicated by the judge's direction"

While discussing the "little and often" case, the Court of Appeal concluded it wasn't relevant here because there was copying of images displayed when playing the game, not just copying of the game itself. They said (emphasis added):

24. In the present case, if the only copyright work that is copied is the game as a whole, the "little and often" would be material, and the correctness of Laddie J's judgment and of Jacob LJ's dicta would have to be decided. But the game as a whole is not the sole subject of copyright. The various drawings that result in the images shown on the television screen or monitor are themselves artistic works protected by copyright. The images shown on the screen are copies, and substantial copies, of those works. If the game is the well-known Tomb Raider, for example, the screen displays Lara Croft, a recognisable character who has been created by the labour and skill of the original artist. It matters not that what is seen on screen is not precisely the drawing, because the software may cause her to be seen performing actions that are not an exact copy of any single drawing. It is clear that what is on screen is a substantial copy of an original…

25. It follows that even if the contents of the RAM of a game console at any one time is not a substantial copy, the image displayed on screen is such. As we said in the course of argument, it may help to consider what is shown on screen if the "pause" button on a game console is pressed. There is then displayed a still image, a copy of an artistic work, generated by the digital data in RAM. The fact that players do not normally pause the game is immaterial, since it is sufficient that a transient copy is made. [and "Section 17(6) expressly provides that a transient copy is a copy."]

So they upheld his conviction.

Other points of interest

A few further points of interest. The Court of Appeal gave their decision "with satisfaction" (para 28):

The recitals to Directive 2001/29/EC emphasise the importance of protecting copyright and related rights in multimedia products such as computer games, and if devices such as modchips could be sold with impunity, the UK would not be conferring the protection of those rights required by the Directive. Secondly, it seems to us to accord with common sense that a person who plays a counterfeit DVD on his games console, and sees and hears the visions and sounds that are the subject of copyright, does indeed make a copy of at least a substantial part of the game, even though at any one time there is in the RAM and on the screen and audible only a very small part of that work. In other words, had it been necessary to decide this appeal on the "little and often" point, we should have followed the judgment of Jacob LJ in Higgs. In the event, however, we have not had to base our judgment on that point.

Now on the "little and often" front, the defendant had tried to rely on the decision of Kitchin J in Football Association Premier League Ltd and others v QC Leisure and others [2008] EWHC 1411 Ch, summarised by Stanley Burnton LJ in para 23 of Gilham as follows (emphasis added):

That case concerned the use of foreign decoder cards in the UK to access foreign transmissions of live Premier League football matches. The claimants complained that the dealing in and use of such cards in the UK involved an infringement of their rights under s.298 of the CDPA and of the copyrights in various artistic and musical works, films and sound recordings embodied in the Premier League match coverage. The facts bore certain similarities to the present. The decoder that received the broadcast signal stored fragments of the various film works, the musical work and the sound recording that were broadcast sequentially, and those fragments were replaced as the broadcast continued. Kitchin J held that when considering copying of a film, the few frames that were stored in the decoder at any one time did not constitute a substantial part of a film, and that the fragments of a film that were copied could not be considered on a cumulative basis.

Stanley Burnton LJ in Gilham pointed out (then adding that Laddie LJ was an expert in this field) that:

On the face of it, his decision is inconsistent with the approach of Jacob LJ in Higgs. It is also inconsistent with the decision of the late and much lamented Laddie J in Sony v Ball, to which Jacob LJ referred. That case too was concerned with Sony games consoles, and acts alleged to infringe the copyright in their games.

In Higgs, Jacob LJ had also said in para 23 (emphasis added):

Mr Higgs is a fortunate man in that it may well be that if the legislation had been less complex and/or the Crown had had greater opportunity to consider the details of copyright law the case would have been proved on the basis that merely playing a pirated game involves making a copy in the console and thus involves infringement. He may also be fortunate that, at least this far, he has not been sued in the civil courts. There the procedure is apt to be much faster, technical slip-ups in evidence can generally be readily cured before final judgment and the remedies of damages, an account of profits, injunction and legal costs are readily obtainable. Breach of an injunction, if serious, can of course itself lead to imprisonment.

Finally, in Gilham para 30 the court said (emphasis added):

Lastly, we repeat with emphasis what Jacob LJ said in Higgs about the trial of cases involving recondite issues of copyright law before a jury. Cases that, for example, involve determination of difficult questions whether a copy is of a substantial part of a copyright work, can and should be tried in the Chancery Division before specialist judges. They can be so tried much more efficiently in terms of cost and time than before a jury, and questions of law can if necessary be determined on appeal on the basis of clear findings of fact. In appropriate cases, the Court will grant injunctive relief, and a breach of an injunction will lead to punishment for contempt of court. If the facts proven against a defendant show that he has substantially profited from criminal conduct, proceedings for the civil recovery of the proceeds of his crimes may be brought under Part 5 of the Proceeds of Crime Act 2002.

In other words:

  1. For copyright protection to be effective, the court clearly felt that the ban on the sale of modchips needs to be effective.
  2. The court considered that just playing a counterfeit or pirated DVD, which results in "visions and sounds that are the subject of copyright" being seen and heard, is very clearly a copyright breach - so that must include pirated movies and films too, whether played from a pirated DVD or indeed any downloaded file. The satellite decoder sellers and pub & bar owners prosecuted in the Football Association Premier League case would probably go down in flames today, based on this. And while the court only discussed images in detail but not audio, they obviously have the same attitude towards both - see para 28.
  3. The Court of Appeal have said very strongly, twice now, that cases involving difficult issues of copyright law should be pursued in the civil courts rather than through criminal prosecutions before a jury.

Heard about the case from SCL.

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